OPPOSITION No B 2 873 696

Prodapt Solutions Europe, Zekeringstraat 17 A, 1014BM Amsterdam, Netherlands (opponent), represented by Ingenias, Av. Diagonal, 421,2º, 08008 Barcelona, Spain (professional representative)

a g a i n s t

Raytheon Anschütz GmbH, Zeyerstr. 16-24, 24106 Kiel, Germany (applicant), represented by Ladas & Parry LLP, Temple Chambers, 3-7 Temple Avenue, EC4Y 0DA London, United Kingdom (professional representative).

On 05/03/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 873 696 is upheld for all the contested goods.

2. European Union trade mark application No 16 211 121 is rejected for all the goods.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 211 121 for the word mark ‘SYNAPSIS’. The opposition is based on European Union trade mark registration No 15 164 965 for the figurative mark The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

a) The goods and services

The goods and services on which the opposition is based are, inter alia, the following:

Class 9: Broadcasting equipment; electronic broadcasting apparatus; software; software programmable microprocessors; software (computer -), recorded; data communications software; process controlling software; interactive computer software; factory automation software; communication modems; communication software; communications apparatus; communications controllers; communications processors; communications equipment; communications networks; communications computers; network communication apparatus; wire communication apparatus; information technology and audiovisual equipment; computer software for application and database integration; computer networking hardware; computer networking and data communications equipment.

The contested goods are the following:

Class 9: Nautical apparatus, namely, navigation apparatus, radar apparatus, autopilot and steering apparatus, and data processing equipment; Pre-recorded solid-state data carriers featuring navigational software for target detection, collision avoidance, route planning, autopilot function, steering, safety alert management, and radar control purposes; downloadable navigational software for target detection, collision avoidance, route planning, autopilot function, steering, safety alert management, and radar control purposes; computers featuring navigational software for target detection, collision avoidance, route planning, autopilot function, steering, safety alert management, and radar control purposes, radar operator panel, radar transceivers; multifunctional workstation system comprised primarily of navigational software for target detection, collision avoidance, route planning, autopilot function, steering, safety alert management, and radar control purposes, radar operator panel, radar transceivers, video and monitor displays; computer hardware featuring navigational software for target detection, collision avoidance, route planning, autopilot function, steering, safety alert management, and radar control purposes; radar operator panel; radar transceivers; video and monitor displays; navigational apparatus in the nature of collision avoidance systems, route planning systems, and radar control systems.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

As a preliminary remark and regarding the applicant´s argument that the goods in conflict have different relevant publics according to the information available on the opponent´s web, it must be noted that a comparison of the goods and services must be based on the wording indicated in the respective lists of goods/services. Any actual or intended use not stipulated in the list of goods/services is not relevant for this comparison since it is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and against which it is directed; it is not an assessment of actual confusion or infringement (16/06/2010, T‑487/08, Kremezin, EU:T:2010:237, § 71).

The contested downloadable navigational software for target detection, collision avoidance, route planning, autopilot function, steering, safety alert management, and radar control purposes; contested pre-recorded solid-state data carriers featuring navigational software for target detection, collision avoidance, route planning, autopilot function, steering, safety alert management, and radar control purposes are included in, or overlap with, the opponent´s software (computer -). Therefore, they are identical.

The contested computers featuring navigational software for target detection, collision avoidance, route planning, autopilot function, steering, safety alert management, and radar control purposes, radar operator panel, radar transceivers; multifunctional workstation system comprised primarily of navigational software for target detection, collision avoidance, route planning, autopilot function, steering, safety alert management, and radar control purposes, radar operator panel, radar transceivers; multifunctional workstation system comprised primarily of navigational software for target detection, collision avoidance, route planning, autopilot function, steering, safety alert management, and radar control purposes, radar operator panel, radar transceivers, video and monitor displays; computer hardware featuring navigational software for target detection, collision avoidance, route planning, autopilot function, steering, safety alert management, and radar control purposes; ; radar operator panel; radar transceivers; video and monitor displays; navigational apparatus in the nature of collision avoidance systems, route planning systems, and radar control systems are included in the opponent´s broader category of information technology and audiovisual equipment and therefore identical.

The contested nautical apparatus, namely, navigation apparatus, radar apparatus, autopilot and steering apparatus, and data processing equipment are included in, or overlap with, the opponent´s data communications equipment and therefore identical.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the price, sophistication, or terms and conditions of the goods purchased.

c) The signs

	SYNAPSIS
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

Neither ‘Synapt’ nor ‘SYNAPSIS’ have a meaning in the context of the relevant territory and are, therefore, distinctive to an average degree. Contrary to the applicant´s arguments, the Opposition Division has no reason to believe that consumers would dissect the contested sign into two elements and not just see ‘-SYS’ as the three final letters. This is all the more true, since the rest of the sign has no meaning and there is no evidence that the average consumer in the relevant territory would recognise ‘-SYS’ as a suffix with a meaning. Finally, it must also be recalled that, when not immediately identifiable or exclusively suggested by the nature and characteristics of the goods, consumers perceive the signs as a whole and do not proceed to analyse their various elements (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

As regards the verbal element ‘SYNAPSIS’, since the protection conferred by the registration of a word mark applies to the word stated in the application for registration, it is irrelevant whether a word mark is depicted in lower or upper case letters if the capitalisation does not depart from the usual way of writing.

The earlier mark is a figurative mark, consisting of the single verbal element ‘Synapt’ written in a fairly standard type face in blue, with a small red triangle placed at the bottom of the final letter ‘t’. Both elements have no meaning in relation to the goods at issue and therefore have an average degree of distinctive character. However, it must be noted that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37). All the described elements are portrayed into a banal black rectangle with no trade mark significance.

The earlier sign has no element that could be considered more dominant (visually eye-catching) than others.

Visually, the signs under comparison coincide in the sequence of letters ‘SYNAP*’,present identically in both marks and forming five out of the eight letters of the contested sign and of the six letters of the earlier mark.

The marks differ in the last letters of their verbal elements, namely ‘SIS’ in the contested sign versus ‘t’ in the earlier mark, in the figurative device as well as in the stylisation of the verbal element of the earlier mark.

The fact that almost all of the letters comprising the earlier mark are included in the contested sign constitutes a significant point of visual similarity. Moreover, the similarities are focused at the beginning of both signs, which is the part that will first catch the consumers’ attention, since consumers normally read from left to right.

The only relevant visual difference between the marks results from the figurative element in the earlier mark. However, for reasons given above, its weight in the overall impression of the sign is less than that of the verbal component. Furthermore, the stylisation of the earlier mark is not particularly striking.

For all the above, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘/SYNAP*/’, present identically in both signs. The pronunciation differs in the sound of the last letters of the contested sign, namely ‘/SIS/’, versus /t/ in the earlier mark.

As the graphic features of the earlier mark are not subject to an aural assessment, as they will not be pronounced, the signs are aurally similar to an above average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as average.

e) Global assessment, other arguments and conclusion

In the present case, the goods are identical and they target both the general and the professional public whose degree of attention will range from above average to high on account on the specialised nature of the goods covered by both marks.

The signs are similar to an average degree visually and to an above average degree aurally to the extent that they coincide in the string of letters ‘SYNAP*’, with the only differing letters being at the end of the signs, and thus, less noticeable. The conceptual aspect remains neutral.

The earlier mark enjoys an average degree of distinctiveness.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

In its observations, the applicant argues that there are several European Union and international registrations containing the string of letters ‘SYNAPT*’ with identical/similar scope of protection and which coexist peacefully with the opponent’s earlier mark. The applicant also states that the opponent did not initiate any opposition proceedings at the time of their publication.

As for the coexistence argument, the Opposition Division wishes to recall that according to case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (03/09/2009, C-498/07 P, La Española, EU:C:2013:302, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86).

However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds for refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard, it should be noted that formal coexistence in national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) at national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis, and such an indicative value should be treated with caution, as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

On the other hand, filing an opposition procedure is a prerogative that the owner of an earlier mark may decide to use or not. It is a discretionary issue that concerns only the proprietor of a trade mark and has no bearing on the present proceedings.

Considering all the above, there is a likelihood of confusion on the part of the part of the public. Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 15 164 965. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Helen Louise MOSBACK

Claudia SCHLIE

Marzena MACIAK

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.